Trademark Paralegal

Overview

This opportunity is exclusively for a trademark paralegal to provide dedicated support to a Trademark Attorney based in New York and assist other trademark paralegals on the team. The role is fully remote and contract-based, requiring the candidate to have their own computer, relevant software, and office supplies to work efficiently. Weekly hours will vary based on experience, expertise, availability, and assigned responsibilities.

Key Responsibilities

• Draft trademark applications including identifying goods and services.
• Prepare, submit, and manage U.S. trademark applications and all related filings such as responses to office actions, statements of use, oppositions, renewals, assignments, and proofs of use with the USPTO.
• Review trademark search reports and address client questions regarding findings.
• Serve as the primary contact for clients concerning trademark filings, prosecution updates, renewals, and conflicts, coordinating matters with the Attorney.
• Coordinate foreign trademark searches and filings with external foreign associates.
• Manage and update the trademark docket for U.S. and international cases utilizing Dockettrak or equivalent software.
• Investigate trademark infringement issues and draft cease and desist letters or takedown requests, coordinating with non-U.S. counsel as needed.

Candidate Requirements

• Between 2 and 5 years of U.S. trademark experience in a law firm or corporate legal department environment.
• Up-to-date knowledge of USPTO trademark procedures is essential.
• Experience using Dockettrak or similar intellectual property docketing systems.
• Ability to manage multiple tasks and prioritize effectively in a fast-paced setting.
• Self-driven and capable of independently handling projects and meeting deadlines.
• Strong attention to detail with meticulous and accurate written communication.
• Proficiency in Microsoft Office applications.
• Familiarity with USPTO filing requirements and documentation.
• Excellent interpersonal and communication skills, demonstrating professionalism and strong client interaction capabilities.
• Proactive attitude coupled with sound judgment and critical thinking skills.
• Additional experience with trademark searching tools like Corsearch and knowledge of copyright filing processes are advantageous.